Sensational Skin Centers, PLLCv.JATA Health Services Anti-Aging Spa, Inc.

Trademark Trial and Appeal Board

Apr 25, 2012

No. 92049781 (T.T.A.B. Apr. 25, 2012)

Mailed: April 25, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Sensational Skin Centers, PLLC

v.

JATA Health Services Anti-Aging Spa, Inc.
_____

Cancellation No. 92049781
_____

Heather L. Buchta and Wendy K. Akbar of Quarles & Brady LLP
for Sensational Skin Centers, PLLC.

Richard L. Robbins of RobbinsFreed for JATA Health Services
Anti-Aging Spa, Inc.
_____

Before Quinn, Holtzman and Bergsman,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Sensational Skin Centers, PLLC (“petitioner”) seeks to
cancel the registration for the mark SENSATIONAL SKIN BY
JATA, in standard character form, for “skin care salons,” in
Class 44. Respondent disclaimed the exclusive right to use
the word “skin.”1

1 Registration No. 3349186, issued December 4, 2007, based on an
application filed November 15, 2006. Respondent claimed February
1, 2007 as its dates of first use anywhere and in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Cancellation No. 92049781
2
Petitioner alleges that it has used the marks
SENSATIONAL SKIN, in standard character form,2 and
SENSATIONAL SKIN and design, shown below,3

in connection with skin cosmetic and laser medical services
prior to the filing date of respondent’s application for
registration or any date of first use on which respondent
can rely, and that respondent’s mark is likely to cause
confusion with petitioner’s marks.
Respondent, in its answer, denied the salient
allegations in the petition for cancellation.
The Record
By operation of the rules, the record includes the
pleadings and the file of respondent’s registration. The
record also includes the following testimony and evidence
introduced by the parties:
A. Petitioner’s Evidence.
1. A notice of reliance on the following items:
a. Copies of petitioner’s applications for the
mark SENATIONAL SKIN, in standard character
form, and the mark SENSATIONAL SKIN and

2 Serial No. 77161090, filed April 19, 2007.
3 Serial No. 77161116, filed April 19, 2007.
Cancellation No. 92049781
3
design, both printed from the USPTO
electronic data base and both for “cosmetic
skin and laser medical services featuring
treatments for acne, acne scars,
pigmentation, rosacea, wrinkles, age spots,
skin discoloration, sun damage, spider veins,
facial veins, facial and body hair, sagging
skin, laser treatments for skin resurfacing,
skin tightening and skin leveling; skin care
salon services featuring microdermabrasion,
glycolic peels, deep pore cleansing and
extractions, facials and paraffin dips,” in
Class 44;
b. A copy of an advertisement from the March 11,
1999 issue of the Arizona Republic displaying
petitioner’s mark SENSATIONAL SKIN in
connection with electrolysis (i.e., the
removal of “undesired hair”);
c. A copy of a “Whois” Internet URL name search
showing petitioner as the owner of the domain
name SENSATIONALSKIN.COM; and
d. A copy of respondent’s answers to
petitioner’s first set of interrogatories.
Cancellation No. 92049781
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2. A notice of reliance on the following items:4
a. A copy of an advertisement displaying
petitioner’s mark SENASATIONAL SKIN, in
connection with the removal of “unwanted
hair” in an unidentified source indicating
that a special offer expires November 25,
1999;
b. A copy of an advertising flyer displaying
petitioner’s mark SENSATIONAL SKIN for a
variety of cosmetic procedures indicating
that the advertisement entitles the holder to
a 20% discount but the offer expires August
15, 2004; and
c. A printout from an archival website
displaying the history of petitioner’s
SENSATIONALSKIN.COM website since 2000.
3. The rebuttal testimony affidavit of S. Kent Brown,
M.D., a member and manager of petitioner.5

4 The parties stipulated to the authenticity and admissibility of
these documents.
5 The parties stipulated to petitioner’s testimony by affidavit.
The essence of Dr. Brown’s testimony relates to petitioner’s
first use of its marks. As such, Dr. Brown’s testimony is
evidence that should have been introduced during petitioner’s
case-in-chief and is not proper rebuttal. However, since
respondent has not objected to the testimony on this ground and,
in fact, stipulated to its admissibility and referenced the
testimony in its brief, we have considered Dr. Brown’s testimony.
See Hunter Publishing Co. v. Caulfield Publishing, Ltd., 1 USPQ2d
1996, 1997 n.2 (TTAB 1986).
Cancellation No. 92049781
5
B. Respondent’s Evidence.
Respondent submitted a notice of reliance on the
following items:
1. An excerpt from petitioner’s website; and
2. An excerpt from a website describing respondent’s
business.
Standing
Dr. S. Kent Brown, a member and manager of petitioner,
testified that since 1998, petitioner “has been in the field
of medical aesthetics and cosmetic dermatology”6 and that it
has identified its services “under the SENSATIONAL SKIN
brand.”7
Our services started with intense pulsed
light hair removal, and have expanded
over the past thirteen years to include;
[sic] Obagi® medical products, treatment
of pigmentation disorders (especially on
darker skin patients), treatment of
acne, rosacia, sun damage, loss of
collagen and elastin associated with
aging, smoking, sun damage, and other
causes, treatment of skin laxity,
wrinkles, and volume loss of skin, and
all aspects of treatment associated with
rejuvenating skin. Some of the most
advanced forms of rejuvenation include
complete CO2 laser resurfacing for skin
tightening, as well as leveling of
disfiguring scars left by nodular cystic
acne and other causes. In addition to
the above, we also provide the more
common products and cosmetic services
such as Botox, lip augmentations, and a

6 Brown Affidavit ¶3.
7 Brown Affidavit ¶¶ 4 and 5.
Cancellation No. 92049781
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full range of resculpting the face with
various techniques.8

Dr. Brown’s testimony is corroborated by the advertisements
petitioner submitted through its notices of reliance.
In view of the foregoing, we find that petitioner has
shown that it has a reasonable belief of damage and a real
interest in this proceeding. Therefore petitioner is not a
mere intermeddler, and it has established its standing.
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982).
Priority
As indicated above, Dr. Brown testified that petitioner
has been using the mark SENSATIONAL SKIN to identify its
medical aesthetics and cosmetic dermatology services since
1998.9 This is prior to the November 15, 2006 filing date
of respondent’s application, the earliest date upon which
respondent may rely.10 In view of the foregoing, petitioner
has proven prior use of its marks in connection with its
medical aesthetics and cosmetic dermatology services.
Respondent argues that the only evidence regarding
petitioner’s use of its marks is “the self-serving testimony

8 Brown Affidavit ¶3.
9 Although opposer pleaded ownership of SENSATIONAL SKIN, in
standard character form, and SENSATIONAL SKIN and design, Dr.
Brown testified only as to SENSATIONAL SKIN.
10 In response to interrogatory No. 4, respondent stated that it
first used the mark SENSATIONAL SKIN BY JATA in commerce “[o]n or
about May 1, 2007.”
Cancellation No. 92049781
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of Dr. Brown, a member of Petitioner.”11 First, Dr. Brown’s
testimony is corroborated by the advertisements submitted
through petitioner’s notice of reliance. Second, even if
Dr. Brown’s testimony was not supported by petitioner’s
advertising, we find that Dr. Brown’s testimony is clear and
convincing. See National Bank Book Co. v. Leather Crafted
Products, Inc., 218 USPQ 826, 828 (TTAB 1993) (oral
testimony may be sufficient to prove the first use of a
party’s mark when it is based on personal knowledge, it is
clear and convincing, and it has not be contradicted);
Liqwacon Corp. v. Browning-Ferris Industries, Inc., 203 USPQ
305, 316 (TTAB 1979) (oral testimony may be sufficient to
establish both prior use and continuous use when the
testimony is proffered by a witness with knowledge of the
facts and the testimony is clear, convincing, consistent,
and sufficiently circumstantial to convince the Board of its
probative value); GAF Corp. v. Anatox Analytical Services,
Inc., 192 USPQ 576, 577 (TTAB 1976) (oral testimony may
establish prior use when the testimony is clear, consistent,
convincing, and uncontradicted).
Also, as best we understand respondent’s argument,
respondent argues that petitioner has not proven priority of
use because petitioner’s services are rendered only in
Arizona and, therefore, “Petitioner has made no showing that

11 Respondent’s Brief, p. 7.
Cancellation No. 92049781
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it is entitled to the federal protection it would deny
[respondent].”12 However, respondent’s argument that
petitioner has not made use of its mark in interstate
commerce is irrelevant. Section 2(d) of the Trademark Act,
provides in relevant part:
No trademark by which the goods of the
applicant may be distinguished from the
goods of others shall be refused
registration on the principal register
on account of its nature unless it …
[c]onsists of or comprises a mark which
so resembles a mark registered in the
Patent and Trademark Office, or a mark
or trade name previously used in the
United States by another and not
abandoned, as to be likely, when used on
or in connection with the goods of the
applicant, to cause confusion, or to
cause mistake, or to deceive.

15 U.S.C. § 1052(d) (emphasis added). Section 2(d) only
requires prior use; it does not require use in commerce.
Accordingly, a petitioner claiming priority may rely on
intrastate use. See National Cable Television Association
Inc. v. American Cinema Editors Inc., 937 F.2d 1572, 19
USPQ2d 1424, 1429 n.4 (Fed. Cir. 1991). See also L. & J.G.
Stickley Inc. v. Cosser, 81 USPQ2d 1956, 1965 (TTAB 2007)
(intrastate use of petitioner’s mark is sufficient to
establish priority); Hess's of Allentown, Inc. v. National
Bellas Hess, Inc., 169 USPQ 673, 677 (TTAB 1971) (prior use
of mark in intrastate commerce sufficient to sustain
petition for cancellation based on likelihood of confusion

12 Respondent’s Brief, pp. 7-8.
Cancellation No. 92049781
9
with that mark); Plymouth Cordage Co. v. Solar Nitrogen
Chem., Inc., 152 USPQ 202, 204 (TTAB 1966) (same).
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also,
In re Majestic Distilling Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29(CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the marks”).
A. The similarity or dissimilarity and nature of
petitioner’s services and the services described in the
registration, the similarity or dissimilarity of
likely-to-continue trade channels and classes of
consumers.

As indicated above, petitioner has made use of its
SENSATIONAL SKIN marks in connection with medical aesthetics
and cosmetic dermatology services. Respondent is seeking to
register its mark for “skin care salons.” In response to
interrogatory Nos. 1 and 2, respondent described its “skin
Cancellation No. 92049781
10
care salons” as generally engaging in “Medical Aesthetics
including Laser Rejuvenation, laser hair removal, cosmetic
injections, chemical peels, and microdermabrasion” and
providing skin care services such as “Affirm Laser Lift,
BOTOX, Chemical Peel, Anti-Wrinkle Fillers, Juvederm,
General Medi Spa, Laser Hair Removal, Restylane, Laser
Treatments, Acne Treatment, General Dermatology, and Smart
Lip.” In view of the foregoing, we find that the services
of the parties are legally identical.
Petitioner’s website introduced into evidence by
respondent shows that petitioner’s medical aesthetics and
cosmetic dermatology services are rendered through its
“Cosmetic, Skin & Laser Clinic.” A “clinic” is “a place …
for the treatment of nonresident patients.”13 In this case,
petitioner’s clinics are a place for providing dermatology
services.
In response to interrogatory No. 2, respondent stated
that its “[s]kin care salons are retail locations in trade
channels and distribution chains supplying the products and
services being offered in respective salons.” A salon is
defined, inter alia, as “a shop, business, or department of
a store offering a specific product or service, esp. one

13 The Random House Dictionary of the English Language
(Unabridged), p. 386 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Cancellation No. 92049781
11
catering to a fashionable clientele: a dress salon; a hair
salon.”14 In this case, respondent’s skin care salons are a
place for offering skin care services.
Based on the record before us, the only difference in
the business model of the parties is the name they use to
refer to their place of business: “clinic” vs. “salon.” In
view of the foregoing, we find that the channels of trade
and classes of consumers are similar.
B. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In comparing the marks,
we are mindful that where, as here, the services are legally
identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there
is a recognizable disparity between the services. Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen
Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007);

14 We take judicial notice of this definition from The Random
House Dictionary of the English Language (Unabridged), p. 1694.

Cancellation No. 92049781
12
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang,
84 USPQ2d 1323, 1325 (TTAB 2007).
Petitioner’s marks are SENSATIONAL SKIN and SENSATIONAL
SKIN and design. Respondent’s mark is SENSATIONAL SKIN BY
JATA. The marks are similar to the extent that they share
the term “Sensational Skin.” In fact, respondent’s mark
incorporates petitioner’s entire mark. Likelihood of
confusion has frequently been found where one mark
incorporates the entirety of another mark. Coca-Cola
Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E.
Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105, 106
(CCPA 1975) (BENGAL for gin and BENGAL LANCER for
nonalcoholic club soda, quinine water and ginger ale);
Johnson Publishing Co. v. International Development Ltd.,
221 USPQ 155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY
DRUM for hairdressing and conditioner); In re South Bend Toy
Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB 1983)
(LIL’ LADY BUG for toy doll carriages and LITTLE LADY for
doll clothing); Helga, Inc. v. Helga Howie, Inc., 182 USPQ
629, (TTAB 1974) (HELGA for women’s clothing and HELGA
HOWIE for women’s clothing).
That proposition is particularly strong in this case
because the services are legally identical and because
respondent distinguishes its marks from petitioner’s mark by
the use of the source modifier “BY JATA” suggesting that
Cancellation No. 92049781
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respondent is somehow associated or affiliated with the
prior user of SENSATIONAL SKIN. See Saks & Co. v. TFM
Industries Inc., 5 USPQ2d 1762, 1764 (TTAB 1987) (FOLIO FIRE
BY FIRE ISLANDER for women’s sportswear is similar to FOLIO
for retail department store services, in part, because “BY
FIRE ISLANDER” suggests that applicant is the source of or
is affiliated with some of the women’s sportswear featured
in opposer’s catalogs and retail stores); In re Apparel
Ventures, Inc., 229 USPQ 225, 226 (TTAB 1986) (“SPARKS by
sassafras” for women’s clothing is similar to SPARKS for
shoes, in part, because “by sassafras” indicates “to
prospective purchasers that ‘sassafras” is the name of the
entity which is the source of the ‘SPARKS’ brand clothing.
Prospective purchasers do not necessarily know or care which
business calls itself ‘sassafras,’ but they would assume
that when ‘SPARKS’ appears on two similar products they both
come from the same source.”); U.S. Shoe Corp. v. Oxford
Indus., Inc., 165 USPQ 86, 87 (TTAB 1970) (COBBIES BY COS
COB for women’s and girls’ shirt-shift is similar to COBBIE
for shoes, in part, because “the addition of one’s name to
another’s mark is an aggravation and not a justification”
for the use of similar marks).
In view of the foregoing, we find that the marks are
similar in terms of appearance, sound, meaning and
commercial impression.
Cancellation No. 92049781
14
C. The nature and extent of any actual confusion and the
length of time during and conditions under which there
has been concurrent use without any actual confusion.

Respondent argues that “[p]etitioner does not and
cannot point to a single instance of customer confusion.”15
(Emphasis in the original). First, it is well settled that
petitioner’s burden is to establish that there is a
likelihood of confusion, not actual confusion. Charette
Corp. v. Bowater Communication Papers Inc., 13 USPQ2d 2040,
2042 (TTAB 1989).
Second, lack of confusion is meaningful only if the
record indicates “appreciable and continuous” use of the
marks for a “significant” period in the same markets.
Gillette Can., Inc. v. Rainir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992). That is not the situation in this case. As
respondent vigorously argues, petitioner renders its
services in Arizona while respondent renders its services in
Georgia.16 Accordingly, there has been no meaningful
opportunity for confusion to have occurred.
In view of the foregoing, the lack of any evidence of
actual confusion is a neutral factor.
D. Balancing the factors.
Because the marks are similar, the services are legally
identical and the channels of trade and classes of consumers

15 Respondent’s Brief, p. 10.
16 Respondent’s Brief, pp. 10-11.

Cancellation No. 92049781
15
are similar, we find that applicant’s mark SENSATIONAL SKIN
BY JATA for “skin care salons” so resembles petitioner’s
SENSATIONAL SKIN marks for medical aesthetics and cosmetic
dermatology services as to be likely to cause confusion.
Decision: The petition for cancellation is granted.
Registration No. 3349186 will be cancelled in due course.